January 13, 2015

Trans-Pacific Partnership Negotiations Highlight IP and Environmental Issues

 

The Trans-Pacific Partnership (TPP) is a trade agreement between the United States, Canada, Mexico, and nations on the Pacific Rim.  The  TPP will provide new market access and regulations, especially for small- and medium-sized businesses.  If ratified, the pact will govern about 40 percent of the world’s gross domestic product and one-third of world trade.  The trade agreement has been compared to the North American Free Trade Agreement (NAFTA).  

 

Negotiations are ongoing, but current drafts of the agreement have drawn mixed attention from intellectual property and environmental experts.  According to a report published by trade ministers participating in the negotiations, intellectual property has provided one of the most complex and challenging areas of debate in discussions so far.  Some parties hold fast to high levels of IP protection, while others emphasize access to ideas.  Participants are still working toward a common approach and have shared that fair use of online content in a digital environment is one of the most contentious areas of debate.

 

Additionally, the current draft of the environmental chapter of this agreement has drawn unwelcome criticism.  Leading green groups such as the Sierra Club, the Natural Resources Defense Council and WWF claim that the current draft actually rolls back on progress made in past free trade pacts.  Among other issues, they mainly voiced concern that the pact currently lacks basic environmental provisions.  The White House responded that they are working toward a robust, fully enforceable environment chapter.

 

 

January 12, 2015

 

China as a Likely Source of Future Clean Tech Innovation

 

Chinese government took a number of important steps in 2014 that could make it an important hub for green innovation in upcoming years.  Chinese Premier Li Keiqiang declared a “war on pollution,” including a set of goals to reach by 2018 and a number of financial incentives to go with them. 

 

This anti-pollution drive makes it a good place for clean, inventive energy firms and startups to achieve scale.  The Premier pledged $800 billion to this effort, which augments approximately $900 million in annual venture capital investment and $1 billion in private equity.  This money will go toward stimuli for manufacturers to upgrade their plants and promotions of green and low-carbon technology.  Clean technology startups and investors are also vying for a piece of that $800 billion pie.  China directs funds toward clean energy companies, and has now taken a turn away from its protectionist patterns by opening up its energy conservation and environment protection industries to foreign and private investment.  Though this policy comes with limitations, it signals a new willingness to work with the international community.  Private equity investment in the environmental sector continues to grow and China’s State Council aims for the industry to grow to $730.5 billion by the end of this year.

 

There is already news of early success stories:  Durham, North Carolina-based Phononic Devices received an investment from Beijing-based VC firm Tsing Capital.  Bill Gates teamed up with California VC firm Khosla Ventures and Chinese carmaker FAW Group to build a factory in Shanxi that will produce 100,000 new two-stroke engines a year, which are 45% more fuel-efficient than commonly used four-stroke engines and will be made for diesel, petrol, and methanol.  The Dutch dust-control company Wuvio, which recently arrived, consults construction companies and transportation firms across the countrry.  Texas-incorporated battery company Microvast joined with local bus companies to pilot lithium titanate batteries, which last up to ten times longer than lithium ion and take 10 minutes to charge.

 

In the midst of such exciting news, it is important to remain aware of some of the downsides for IP amongst these developments.  Unfortunately, Chinese firms do not pay much for intellectual property and copy it when they figure out how.  Second, the above-mentioned financial incentives are limited to companies which fit within and benefit China’s prescribed corporate ecosystem.  An example of this is Tesla Motor’s recent arrival in China.  This American electric-car firm, with cutting-edge clean technology, has no benefit from potential subsidies and tax breaks because its model of importing vehicles does not enrich Chinese firms of transfer intellectual property to local ventures.

 

 

April 14, 2011

Clean Technology Partnership Meeting at the USPTO 

The U.S. Patent Office is hosting a Clean Technology Partnership Meeting at the Patent Office in Alexandria, Va. on Wednesday, April 27th, 2011 from 1:00-5:00 p.m. to provide a forum for sharing ideas, experiences and insights on improving the clean technology programs.  This is yet another effort made by the Patent Office to promote innovation in clean technology and alternative energy.

For more information, including attendance, visit the Patent Office website.

 

December 6, 2010

CleanTech Open's New Winner 

Puralytics has won this years Cleantech Open competition for its water-treatment technology that utilizes LEDs or sunlight in its process.  As the winner, Puralytics was awarded $250,000.

Surprisingly, a search on the USPTO website and the WIPO website did not reveal any patents or patent applications assigned to Puralytics.  It could be that it has patent applications that have not yet published.

 

October 12, 2010

Green Technology Patent Search

The patent cooperation treaty (PCT) has launched a new on-line tool to help conduct patent searches specifically in the area of green technology, referred to as the IPC Green Inventory.  The IPC Green Inventory is hyperlinked to the World Intellectual Property Organization's (WIPO) PATENTSCOPE database to uncover international applications filed under the PCT related to specific fields in green technology.

 

June 4, 2010

Classification Requirement Eliminated in Green Technology Pilot Program

On May 21, 2010 the USPTO announced that it has eliminated the classification requirement to enter into the Green Technology Pilot Program.  Originally, to qualify for the Green Technology Pilot Program, the primary classification of an application had to fall under one of the specific classifications identified by the USPTO.  Due to the disappointing number of petitions to enter the program and the high number of petitions dismissed due to the classification requirement (see April 26, 2010 entry below), the USPTO has lifted the classification requirement altogether.  The other requirements remain.

For those whose petitions were denied, re-filing their petitions within one month of the notice (or June 21, 2010) will be given priority as of the date the petition was originally filed.

 

April 26, 2010

USPTO Statistics Show Only One-Third of Petitions Granted in Green Technology Pilot Program

On April 22, 2010 the patent office published the Green Petition Report Summary with statistics regarding the Green Technology Pilot Program.  According to the report the patent office received 929 petitions, but only 326 were granted (approx. 35%).

According to an article published in Scientific American, the Commissioner for Patents, Bob Stoll, seems to imply that most dismissals were due to failure to meet the classification criteria.  One of the criteria to enter into the Green Technology Pilot Program is that the application must fall under one of the enumerated classifications.  More specifically, although not expressly stated, it must be the primary classification that falls under one of the enumerated classifications.

We filed a petition for an application falling under one of the qualifying classifications.  In dismissing the application, the examiner stated, “while the pre-grant publication published from the instant application may have had secondary classifications that were on the list of qualifying classifications for the Green Technology Pilot Program, it is the primary classification of the application that controls….”  This “primary classification” rule is not expressly stated in the announcement of this pilot program, but it may the primary reason for the large number of dismissals of applications for inventions that, despite their classifications, would help the environment.

 

April 22, 2010

Sharing Green Technology Information 

Back in July 2009 I indicated that some companies were interested in dedicating their patents to the public to promote the free exchange of ideas related to green technology.  It looks like the Web site has been launched:  greenxchange.force.com.  However, it still appears to be in its infancy as it is not taking members at this time and information is limited.

The pilot program was scheduled to run for 12 months (beginning in December 2009) with the patent office accepting the first 3,000 petitions.  Given that the patent office has only received 929 petitions after nearly 5 months, perhaps the patent office will do away with the primary classification requirement.  Since only applications filed before the pilot program were eligible for the program, my guess is that the number of petitions filed during the second half of the program will diminish.  There was probably a mad rush to be one of the first 3,000 filers when the announcement first came out.

If this is true, then those whose petitions were dismissed might consider filing a petition for reconsideration as we did.  At the very least, the patent office should open up the classification criteria to include secondary classifications rather than limiting it only to primary classification, especially since this was not expressly stated in the announcement. 

 

December 8, 2009

Accelerating Examination of Green Technology Patent Applications in the USPTO 

The United States Patent and Trademark Office (USPTO) has jumped on board to fast track patent applications related to green technology, clean technology, or alternative energy by easing the procedural requirements for accelerated examination.  The qualified applicants need only file a Petition to Make Special and a Statement of Special Status.  This puts the USPTO akin to the UK patent office (UKIPO) and the Korean patent office (KIPO) discussed earlier on this site.

Under the Green Technology Pilot Program, eligible patent applications will be examined out of turn (i.e. brought closer to the front of the line).  The PTO indicates under the accelerated examination, the pendency period can be reduced up to one year.  Given that the average pendency period for applications in the green technology industry is 30 to 40 months, applicants could be looking at about 1.5 to 2 years to get a patent issued as opposed to 2.5 to 3.5 years.  This is not quite the UKIPO's 9 month accelerated examination or KIPO's 1 month accelerated examation, but a step in the right direction.

Applications pertaining to the following categories are eligible for accelerated examination under the Green Technology Pilot Program

  1. Environmental Quality (e.g. contributes to the restoration or maintenance of the basic life-sustaining natural elements);
  2. More Efficient Utilization and Conservation of Energy Resources;
  3. Development of Renewable Energy Resources; or
  4. Greenhouse Gas Emission Reduction.

The procedure for filing for accelerated examination for green technologies has been greatly simplified from the regular accelerated examination procedure.  Just to highlight a few similarities and differences, the accelerated examination for green technologies:

  1. Does not require a pre-examination search with analysis;
  2. Still requires a maximum of 3 independent claims and maximum of 20 total claims;
  3. Still requires election without traverse in response to a restriction requirement;
  4. Requires request for early publication plus fee; and
  5. Must be filed electronically.

For the complete requirements for filing the Petition to Make Special for the Green Technology Pilot Program, click here.

Since this is a pilot program, the USPTO will only accept the first 3000 petitions to make special for applications filed before December 8, 2009 (the publication of the notice of the Green Technology Pilot Program).  In addition, the normal petition fee of $130.00 has been waived.

 

December 3, 2009

Accelerated Examination in Korean Intellectual Property Office for Green Technology

Since October 1, 2009, the Korean Intellectual Property Office (KIPO) has been offering a super-accelerated examination (SAE) of patent applications directed towards “green technology.”  This apparently is different from the regular accelerated examination offered for other types of patent applications in KIPO.  Through the SAE, KIPO indicates that an application can be granted in less than one month.  A representative at KIPO has indicated that under the regular accelerated examination (non-SAE) a first action can issue within three months.

The burden of requesting SAE under KIPO appears to be somewhere in between the high burden of U.S. accelerated examination and the low burden of U.K. accelerated examination.  Unlike the UK, a simple request is not sufficient.

First, there are extra fees involved.  Second, a search must be conducted by an “authenticated agency.”  Unlike in the U.S., where after conducting a prior art search the applicant must also distinguish how his/her claims from the prior art; at KIPO, the authenticated agency provides the analysis.  At a cost, of course.

Regardless, patents directed towards alternative energy or green/clean technology appears to have favor in the patent offices.

 

November 11, 2009 

Implausible Scientific Principles

In the quest for finding alternative energy sources, inventors may come across phenomena that is contrary to accepted principles of science.  Although understanding the principles behind how an invention works is not required for a patent, and espousing a new scientific principle may be tolerated, the inventor should be careful:

  1. not to incorporate those principles into the claims; and 
  2. to provide objective, experimental evidence supporting the phenomena. 

When presented with an inherently unbelievable undertaking or an implausible scientific principle, the Patent Office can challenge the utility of the invention and reject the application if the examiner’s challenge is not sufficiently rebutted under 35 U.S.C. 101.  In re Cortright, 165 F.3d 1353, 1357 (Fed. Cir. 1999).

In two recent Board of Patent Appeals and Interferences (Board) decisions, the Board affirmed an examiner’s rejection of the applications as inoperative and therefore lacking utility.  The same individual, Ping Wha Lin, was the applicant for both applications.

In Ex parte Lin I the claims were directed towards generating electricity by inducing a sustained chain reaction, including nuclear reactions.  The specification indicated that nuclear reactions include nuclear fusion, with specific reference to cold fusion.  In Ex parte Lin II the claims were directed towards a method of generating a sustained nuclear reaction from a gas stream containing water as a source of hydrogen atoms.  Again the claims included the step of inducing a nuclear reaction, e.g. cold fusion.

Given the implausible nature of the claims, the examiner challenged the utility by pointing out numerous errors and inconsistencies in the specification and providing documentary evidence that the scientific community doubted the operability of the cold fusion process.

The burden was shifted to the applicant to rebut the examiners findings.  The applicant asserted that his theory was accepted by the scientific community because he had been invited to present his theory at numerous conferences, his experiments were performed by a highly reputable research company, and he had received patents on the same method in the UK and China.

The Board was not persuaded by these arguments.  First, the experiments were done in close consultation with the inventor and, therefore, was given little weight.  Nonetheless, even if the experiments were given its due respect, the experiments did not show nuclear fusion took place, rather, it showed an increase in temperature, which the applicant inferred was an indication of nuclear fusion.  The applicant did not utilize scientifically-accepted measures to confirm nuclear reaction, such as measuring emissions of neutrons, gamma rays, tritium, and/or helium. 

Second, the Board indicated that invitations to conferences is not an indicator that the applicant’s principles were accepted by the community, rather these were mere indications of interest in the topic.  Third, the laws on patentability differ in China and the UK compared to the U.S., therefore, patents granted in these countries would not affect any decision by the U.S. Patent Office.

Even though these two Board decisions are not precedential opinions, I think there are two key points that can be taken away from these cases.  First, do not incorporate principles and theories into the claims.  Stick to the apparatus and/or the specific steps required to achieve a result.  Second, when dealing with results/phenomenon that seem inexplicable or contrary to accepted principles of science, be sure to provide the objective tests showing the claimed results, and if possible, have the tests conducted by independent researchers not under close association with the applicant.

 

October 6, 2009

Alternative Energy at the Board

I recently conducted a search for cases related to alternative energy, alternative fuel, clean energy, clean technology, and green technology that were coming up at the Board of Patent Appeals and Interferences (the Board).  The Board is often times the last step for patent procurement for inventors.  When inventors are dissatisfied with the examiner’s decision in rejecting their claims, they can appeal to the Board.  Bear in mind, these cases are provided for their informative value and may not be relied upon as binding precedent.

There were only two hits for this type of keyword search.  In both cases the issue was whether the invention was obvious.  The first case, Ex parte Schooler, was related to a hybrid fuel vehicle.  The second case, Ex parte Dai, related to an insect capturing apparatus utilizing a Stirling engine. 
 
The obviousness issue continues to be a huge hurdle for inventors.  Arguing that the combination of the prior art would destroy the function of the invention or the intended purposes of the prior art references is a strong argument against an obviousness rejection.  Unfortunately, for the inventors here, it appears that such evidence could not be provided and the inventors were left with arguing that the principles of operation taught by the prior art were different from theirs, i.e. the mechanism of deriving energy in the prior art was different from the mechanism of deriving energy in their inventions.  The Board was not persuaded by these types of arguments alone.

In Ex parte Schooler, the claimed hybrid fuel vehicle included an internal combustion engine, a battery-powered electric motor, and pedals that could recharge the electric motor.  The examiner found this to be obvious in light of two prior art references.  

The first reference disclosed a battery powered electric vehicle that used “free energy sources,” such as the sun, wind, and human power.  It also disclosed pedals to recharge batteries.  The second reference disclosed a hybrid vehicle with electric motors and a heat engine. 

The examiner relied on the second reference for the teaching of the internal combustion engine missing from the first reference stating that a person of ordinary skill in the art would have found the combination obvious.

Apparently, the crux of the inventor’s argument was that internal combustion engines could not be used with the first reference because of the weight.  Unfortunately for the inventor, small internal combustion engines were available at the time, therefore, the Board was not persuaded by this argument.

In Ex parte Dai, the invention was directed towards an insect capturing apparatus using a Stirling engine that transforms heat to kinetic energy to generate a gaseous flow that attracts insects.  

The primary art relied upon by the examiner taught an insect trap using a combustion device that created a gaseous flow created by a fan driven by electrical power to attract insects.  

The primary art also indicated that energy for the fan can be derived from other sources.

The secondary prior art taught a Stirling engine that used heat from a combustion engine to perform work.  The examiner relied on the secondary art to provide the missing Stirling engine as the other energy source in the primary art to render the invention obvious.

The Board was not convinced by the Applicant’s argument that the difference in the principle of operation would not render his invention obvious because both principles relied on the same general principle of transforming thermal energy into a different energy form (electrical or kinetic). 

 

August 21, 2009

Clean Energy Patents Continue to Rise

According to the Clean Energy Patent Growth Index (CEPGI) the number of patents granted in the U.S. directed towards clean energy continues to rise over previous quarters.  Clean energy categories include technology related to Solar, Wind, Hybrid/electric vehicles, Fuel Cells, Hydroelectric, Tidal/wave, Geothermal, Biomass/Biofuels and other clean renewable energy.  According to the CEPGI, during the second quarter of 2009 274 patents were granted in the U.S., which is an increase from the first quarter of 2009 and an increase from last year.  Patents directed towards fuel cells lead the way among the clean energy categories.  Biofuels also reached an all time high.  Although great news for inventors, I am curious to know the trend for the number of patents granted relative to the number of applications filed.

 

August 14, 2009

Potential Funding for Alternative Energy Technology

I recently came across this Web site hosted by Clean Tech Open that puts on a competition for businesses involved in the alternative energy field.  Apparently Clean Tech Open puts on a competition and awards winners a substantial amount of money to fund their research projects in the alternative energy field.  Unfortunately, submissions for this year’s competition is closed.  However, this may be a Web site to keep in the back of your mind as 2010 approaches.  Perhaps, Clean Tech Open will sponsor another competition.

 

July 31, 2009 

More Patents to be Dedicated to the Public

Nike, Creative Commons, and Best Buy are beginning their own project, referred to as GreenXchange, where they plan on dedicating their patents, presumably related to green technology, to the public.

 

July 24, 2009

Patents Dedicated to the PublicTo enter the Green Channel, the applicant

The World Business Council for Sustainable Development (WBCSD) has implemented a commendable initiative, referred to as the Eco-Patent Commons, which dedicates patents directed towards eco-friendly inventions to the public.  The idea is that the free exchange of intellectual property will promote innovation.  Companies, at their discretion, can pledge any of their patents to the public.

To be sure, the WBCSD is not asking for patent holders to dedicate patented technology that are key assets.  Rather, the WBCSD recognizes that companies may hold patents are not of significant value to the company itself, but may be significant if another company could utilize it.

For a list of patents dedicated to the public visit the Eco-Patents Database.

 

July 21, 2009

Accelerating Examination of Green Technology Patent Applications

On May 12, 2009 the UK Intellectual Property Office (UKIPO) announced the implementation of the Green Channel to fast-track examination of patent applications related to green technology.  The UKIPO indicates patents related to green or environmentally-friendly technology can potentially issue as early as 9 months from the filing date.  Entering the Green Channel appears to simply require a request and an adequate reason (e.g. application related to green technology) in addition to the normal filing requirements.  A representative from the Patents Legal Section confirmed that the usual search and examination fees would apply but that no additional fees would be due. 

The U.S. Patent and Trademark Office (USPTO) also offers accelerated examination for applications related to energy or improving environmental quality; however, the applicant must pay additional fees, comply with additional restrictions and requirements (such as the number of claims filed), give up certain rights, and expend a considerable amount of money conducting his/her own preexamination search with a detailed analysis of why the claims are patentable over the references cited.  The USPTO has established a goal for completing accelerated examinations within 12 months.